Thomas R. Lee, Eric D. DeRosia, and Glenn L. Christensen (2008), “Sophistication, Bridging the Gap, and the Likelihood of Confusion: An Empirical and Theoretical Analysis,” Trademark Reporter, 98 (July/August), 913-949.
ARTICLE:
Trademark Reporter (INTA’s scholarly law journal, published since 1911)
EXTENDED ABSTRACT:
One of the central concerns of trademark infringement disputes is the multifactor test: the list of issues that courts consider when trying to determine whether consumers are likely to confuse a Jr. trademark as a Sr. trademark. As summarized by Beebe,1 the thirteen circuits have thirteen different multifactor tests. There is some broad agreement among the circuits in terms of the content of their multifactor tests. For example, twelve of the thirteen circuits recognize that consumer “sophistication” (i.e., the degree of care likely to be exercised by potential consumers)2 should be considered in the multifactor test. However, there is much disagreement among the circuits. For example, only five of the circuits recognize “bridging the gap” (i.e., the consumer perception of the likelihood that the owner of the Sr. mark will extend into the Jr. mark’s product category) as a factor that should be considered.
At their core, the various multifactor tests are attempting to get at an issue of consumer psychology: what factors influence the likelihood that a consumer will be confused by a Jr. mark?
To help identify the factors that belong in the multifactor tests, this article reports empirical research that we conducted to test whether “bridging the gap” and “sophistication” are truly antecedents of likelihood of confusion. We used a controlled experimental method, and we measured consumer confusion with the Eveready test.3
Bridging the Gap
Our empirical findings indicate that likelihood of confusion among consumers is increased when a competitor of the Sr. user has “bridged the gap” to come into competition with the Jr. user. That is, when a competitor of the Sr. mark “bridges the gap” into the Jr. product category, consumers perceive the Sr. mark as being more likely to also “bridge the gap,” and this increases the likelihood that consumers will be confused by a Jr. mark in that category. Thus, we demonstrate that likelihood of confusion is so highly sensitive to the “bridging the gap” factor that even a competitor “bridging the gap” has an influence on the likelihood of confusion.
An example will clarify the chain reaction. In 2008, Kellogg Co. extended its FROOT LOOPS brand of breakfast cereal into the clothing category. Our study’s results suggest that when consumers become aware of this brand extension, they will perceive all other Sr. marks in the breakfast cereal category to be more likely to “bridge the gap” into the clothing category. This, in turn, makes those Sr. marks in the breakfast cereal category more vulnerable to source confusion from Jr. marks in the clothing category. This is not a rare circumstance. The USPTO database lists 24 Sr. marks in the breakfast cereal category that are identical to Jr. marks in the clothing category. For example, Honeycomb breakfast cereal (owned by Post Foods) is identical to Honeycomb brand clothing (U.S. Trademark Registration no. 2744892), Total breakfast cereal (owned by General Mills) is identical to Total brand clothing (U.S. Trademark Registration no. 2074821), and Life breakfast cereal (owned by Quaker Oats Co.) is identical to Life brand clothing (U.S. Trademark Registration no. 3585018). One brand extension by FROOT LOOPS makes each of the 24 Sr. breakfast cereal marks more vulnerable to confusion with their identical Jr. clothing mark counterparts.
Sophistication
Our findings also indicate that a more “sophisticated” consumer is more likely to suffer confusion in this circumstance. This is in marked opposition to the typical assumption in case law that greater care from consumers cuts against likelihood of confusion.
To offer guidance for identifying the circumstances in which “sophistication” has an effect that runs counter to the prevailing wisdom, we offer a theory-guided explanation of its role in consumers’ likelihood of confusion.
1 Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 Cal. L. Rev. 1581, 1582 (2006).
2 Thomas R. Lee, Glenn L. Christensen & Eric D. DeRosia, Trademarks, Consumer Psychology, and the Sophisticated Consumer, 57 Emory L. J. 575 (2007).
3 Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 385-88 (7th Cir. 1976).
– Eric DeRosia